Archive for the ‘In re Bilski’ Category

OK, the Supreme Court says it is releasing its Bilski decision on Monday. Are you anxiously looking forward or dreading the moment? To be honest, I am not quite sure how I feel about it, but I am sure of one thing: its going to be a very entertaining day! As I said back a few weeks ago, I fully expect business method patents to be put out of business. The trick will be how it gets done, and the ramifications for the gray areas around business methods. I also expect a more flexible test of what is statutory and what isn’t. Who knows, maybe the Supreme Court will give In re Nuijten “signals” a second chance while killing business methods!

For those of you over 40 or so, here is the lyrics to the Mommas and the Papas “Monday, Monday” — consider “business method patents” the love lost in this song:

Monday Monday, so good to me,
Monday Monday, it was all I hoped it would be
Oh Monday morning, Monday morning couldn’t guarantee
That Monday evening you would still be here with me.

Monday Monday, can’t trust that day,
Monday Monday, sometimes it just turns out that way
Oh Monday morning, you gave me no warning of what was to be
Oh Monday Monday, how could you leave and not take me.

Every other day, every other day,
Every other day of the week is fine, yeah
But whenever Monday comes, but whenever Monday comes
You can find me cryin’ all of the time

Monday Monday, so good to me,
Monday Monday, it was all I hoped it would be
Oh Monday morning, Monday morning couldn’t guarantee
That Monday evening you would still be here with me.

Every other day, every other day,
Every other day of the week is fine, yeah
But whenever Monday comes, but whenever Monday comes
You can find me cryin’ all of the time

In two recent postings I have been exploring the distinction between real and abstract data and how those distinctions play into the question of patentable subject matter under Section 101. My thoughts on this topic included observing that “data” has both real and abstract connotations – it is real when it is processed in a computer (how else could it be processed?) but on the other hand the data typically represents some other entity, be it a physical entity such as a machine part in a CAD system, or an abstract idea, such as a human language word in an electronic dictionary. I further observed that it’s important to keep these distinctions in mind when drafting claims so that at least some claims are limited to processing real data, as opposed to speaking only in terms of abstract data.

So, if data is “real” and therefore not abstract, and therefore tangible, how can it be that data encoded in the “signal” of claim 14 in In re Nuijten not be statutory? After all, it has to be real because it can be received and decoded. Here is the claim:

14. A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.

I was surprised to find in reading the Nuijten decision it did indeed, according to at least one way to look at it, turn on the notion of whether the claim at issue was limited to covering a real, tangible signal, as opposed to a signal that was “devoid of matter.” (page 17). In essence, the Federal Circuit found:

1) The “signal” claimed by Nuijten did indeed require a physical carrier

2) The “signal” limitation was all-encompassing enough to cover electromagnetism as the physical carrier

3) Electromagnetism is not “matter” as required under 101 to qualify as an “article of manufacture” or as a “composition of matter”

4) The electromagnetism is fleeting and transient, although this characteristic was not necessary to support the reasoning of the case

So, is this good reasoning? Can something “physical” not be “matter” under Section 101? Is electromagnetism not “matter” within the scope of Section 101?

It is interesting to note that the CAFC first grapples with whether claim 14 actually claims something physical at all, and concludes that it does, even thought the Board had found it did not:

“the signal . . . has no concrete tangible physical structure”; and “not composed of matter and [therefore] clearly not a ‘composition of matter.’”

“[t]he signal does not have any physical structure or substance and does not fit the definition of a ‘manufacture’ which requires a tangible object.”

The CAFC found otherwise, that the “signal” of claim 14 required a “physical carrier”:

“Nuijten’s position on this issue is correct in a limited way. A “signal” implies signaling—that is, the conveyance of information. To convey information to a recipient a physical carrier, such as an electromagnetic wave, is needed. Thus, in order to be a “signal,” as required by the claim, some carrier upon which the information is embedded is required. See Arrythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 1059 (“The view that there is nothing necessarily physical about ‘signals’ is incorrect.” (quotation marks omitted)).

However, while the claims are limited so as to require some physical carrier of information, they do not in any way specify what carrier element is to be used. The only limitations in Claim 14 address the signal’s informational content. Specifically, the signal must encode some supplemental data, it must have been encoded according to a “given encoding process,” and a sample, or single data point, located before the location of the supplemental data must be different from the original. The text of the claims is not limited by any specified physical medium, nor do the dependent claims add any physical limitations. They again require only that the signal carry certain information—a watermark, video, or audio. Therefore, any tangible means of information carriage will suffice for all of the claims at issue. Nuijten’s claims can of course be embodied by conventional, known means, such as electrical signals, modulated electromagnetic waves, and pulses in fiber optic cable. So long as some object or transmission carries the information specified by Nuijten’s claim, it falls within that claim’s scope regardless of its physical form. In summary, some physical form for the signal is required, but any form will do, so long as a recipient can understand the message—the nature of the signal’s physical carrier is totally irrelevant to the claims at issue.”

However, the CAFC appears to do a logical 180 later in the opinion, when it says that, in essence, the “signal” of claim 14 is not necessarily physical matter sufficient to qualify as an “article of manufacture” or a “composition of matter.”

“All signals within the scope of the claim do not themselves comprise some tangible article or commodity. This is particularly true when the signal is encoded on an electromagnetic carrier and transmitted through a vacuum—a medium that, by definition, is devoid of matter. Thus, we hold that Nuijten’s signals, standing alone, are not “manufacture[s]” under the meaning of that term in § 101.”

This is very interesting reasoning. Let’s take a look at it:

1) The “signal” of claim 14 does require a “physical carrier” which can be electromagnetic

2) The electromagnetic “signal” can travel through a vacuum

3) A vacuum is devoid of “matter”

4) Therefore, the “signal” at least in one form within the meaning of the claim cannot be made of “matter”

5) Because the “signal” is not necessarily limited to “matter”, it can’t be an article of manufacture

And, by extension, the CAFC is saying that something “physical” is not necessarily “matter” sufficient to qualify an invention as an “article of manufacture.”

So, is this really logical? Can something that is admittedly “physical” not be “matter.” Webster’s Merriam dictionary says:

1) “Physical” means “having material existence : perceptible especially through the senses and subject to the laws of nature <everything physical is measurable by weight, motion, and resistance — Thomas De Quincey> b : of or relating to material things.”

2) “Matter” means “the substance of which a physical object is composed b : material substance that occupies space, has mass, and is composed predominantly of atoms consisting of protons, neutrons, and electrons, that constitutes the observable universe, and that is interconvertible with energy”

3) “Electromagnetism” means a fundamental physical force that is responsible for interactions between charged particles which occur because of their charge and for the emission and absorption of photons, that is about a hundredth the strength of the strong force, and that extends over infinite distances but is dominant over atomic and molecular distances —called also electromagnetic force”

Realizing that electromagnetic energy is “intercovertible” with “matter,” the Federal Circuit added in footnote 8: “We recognize the wave-particle duality as applied to electromagnetic energy. However, the fact that photons traveling at or near the speed of light behave in some ways like particles does not make them tangible articles.”

Well, to answer the question of whether it is logical to say that electromagnetism is “physical” and yet not be “matter” I would have to say yes, so long as you accept that an electromagnetic particle has no mass and therefore cannot be not “matter” by definition.

Interestingly, the In re Nuijten decision introduces yet another facet to the “abstract” vs. “tangible” analysis used to separate subject matter under Section 101: the notion that tangible isn’t enough, that the tangibility has to be found in some kind of “matter” and not just a “force” like electromagnetism, or some other physical realm that has no matter.

So, coming full circle to the issue of whether “data” is real or intangible in nature, the question arises if the Nuijten court would have found the state of a charge in a transistor, or the magnetic state of a disk, to be “matter” or simply an intangible force. I think here the answer is clear: electrical charges in a circuit result from electrons, which do have mass, and magnetic storage is the result of the orientation of magnetic poles of atoms, which do have physical existence and mass. Further, optical storage results in physical changes to the medium. So, where data is stored in these and other physical forms it is “matter” within the logic of Nuijten.

Perhaps most importantly, the lesson to take away from Nuijten is to avoid, at least for now, attempting to claim data that is stored or encoded only into a medium that has no “matter.” If you claim a form of signal that does have “matter”, then In re Nuijten arguably does not apply. For example, a digital form of the signal in Nuijten, stored in a computer memory or on a magnetic disk, does have mass and is matter and therefore outside the prohibition of Nuijten.

As to the question of whether In re Nuijten asked the right questions to arrive at its result, or took too limited a view of what an “article of manufacture” should be under Section 101, tune in later and I will give you my view on that.

In my posting of May 29 I took up the inquiry of the nature of “data,” and in particular whether it was “real” (i.e. physical) or “abstract” and consequently either inside or outside the realm of patent protection. My thinking in that posting didn’t get much beyond observing that data was most definitely “real” in its physical embodiment in a computing system being processed, for if it can be processed by a machine, it can’t be ether.

The term “data,” however, has more than one meaning. As used to describe data in a computer, it refers to what I call “real data” or “physical data.” As used in other contexts, it often refers to the abstract notion of data. For example one dictionary defines data as either: “a collection of facts from which conclusions may be drawn” or “an item of factual information derived from measurement or research.” This form of data I will call “abstract data.”

Let me also observe that often, in conversation or in writing, there is no effort to distinguish between the notion of abstract data or physical data that is an embodiment of the abstract data. I think this lack of clear differentiation between the two realms of data certainly does not help in analyzing subject matter eligibility.

The remainder of this post I am going to use to review the decision in In re Warmerdam, 3 F.3d 1354 (Fed. Cir. 1994), from the perspective of the notion of real vs. abstract data. Warmerdam involved an appeal for the USPTO to the Federal Circuit regarding an application directed to a method and apparatus for controlling the motion of objects and machines, such as robotic machines, to avoid collision with other moving or fixed objects. The prior art taught that collision avoidance operations can be simplified by assuming that the objects are larger and more regularly shaped than they actually are. This can be done by treating the object as if it were a circle or sphere (called a “bubble”) of sufficient size to enclose the object, and by assuming that any motion that impinges upon the circle would produce a collision. Warmerdam’s invention claimed a further refinement of prior art bubble systems in which the determination of the boundary position was refined by replacing the spherical bubble zone with a set of smaller, more refined bubble zones. The claims at issue were as follows:

1. A method for generating a data structure which represents the shape of [sic] physical object in a position and/or motion control machine as a hierarchy of bubbles, comprising the steps of:

first locating the medial axis of the object and

then creating a hierarchy of bubbles on the medial axis.

Claims 2-4 recite both top-down and bottom-up procedures for creating the bubble hierarchy. Claim 2 is directed to the top-down procedure:

2. The method of Claim 1 wherein the step of creating the hierarchy comprises a top-down procedure of:

first placing a root bubble which is centered at the center of gravity of the object and has a radius equal to the maximum distance from the center of gravity to the contour of the object;

next, if the medial axis has a plurality of branch lines, placing a plurality of first successive bubbles each of which encompasses a distinct part of the object which is described by one of said branch lines; and

then successively dividing each line of the medial axis into two new line parts and placing a pair of next successive bubbles each of which encompasses a distinct part of the object which is described by one of said new line parts.

Claims 3-4, by contrast, are directed to the bottom-up procedure for creating the bubble hierarchy:

3. The method of Claim 1 wherein the step of creating the hierarchy comprises a bottom-up procedure of:

first representing the medial axis as [sic] large plurality of discrete points;

next placing the centers of a plurality of lowest level bubbles at said discrete points, where the radius of each bubble is equal to the minimum distance from the corresponding <31 USPQ2d 1757> center point to the contour of the object; and

then successively creating new bubbles by merging the smallest bubble remaining with its smallest neighbor(s) to create a new bubble and repeating this step until only one root bubble remains.

4. The method of Claim 3 wherein two old bubbles are merged to yield a new bubble in accordance with the formulas: [Formulas omitted.] <3 F.3d 1358>

wherein r1 and r2 are the radii of the old bubbles, j is the distance between the centers of the old bubbles (x1,y1,z1) and (x2,y2,z2) are the coordinates of the center of the old bubbles, r ‘ is the radius of the new bubbles, and (x ‘,y ‘,z ‘) are the coordinates of the center of the new bubble.

Claim 5 is directed to a machine:

5. A machine having a memory which contains data representing a bubble hierarchy generated by the method of any of Claims 1 through 4.

Claim 6 is directed to a data structure:

6. A data structure generated by the method of any of Claims 1 through 4.

The court found with respect to claim 1 that the steps of “locating” a medial axis, and “creating” a bubble hierarchy “describe nothing more than the manipulation of basic mathematical constructs, the paradigmatic “abstract idea,” and therefore not statutory under Section 101.

On the other hand, the Federal Circuit found claim 5 patentable: “Claim 5 is for a machine, and is clearly patentable subject matter” over the objections of the USPTO Board of Appeals that the grounds it was indefinite under 35 U.S.C. Section 112, second paragraph. The Federal Circuit, however, found that claim 5 satisfied the Amgen test: “It covers any machine (presumably including a known computer) having a memory which contains any data representing a bubble hierarchy determined by any of the methods of claims 1-4.” As pointed out by the court, the Board considered claim 5 to leave unclear and unexplained how a memory is made or produced by the steps of generating recited in claims 1 through 4: “The broad exercise of geometrically representing the shape of an object with a hierarchy of bubbles on the <31 USPQ2d 1760> medial axis of the object as recited in claim 1 simply does not produce a memory or data in memory . . .” The court rebuffed this position:

“We are not persuaded. The ideas expressed in claims 1 through 4 are well known mathematical constructs, and lend themselves to manipulation through known computer technology. There has been no showing that one skilled in the art would have any particular difficulty in determining whether a machine having a memory containing data representing a bubble hierarchy is or is not within the scope of claim 5. The Board’s point, that the claim leaves unclear the technique of how the memory is configured with the data, has no bearing on this issue. The claim plainly covers all such techniques. Whether such a programmed machine is new, useful, unobvious, or otherwise patentable is not at issue in this appeal, and we express no opinion thereon. Accordingly, we conclude the Board erred in sustaining the rejection of claim 5 for indefiniteness.”

As to claim 6, however, the court came to the opposite conclusion in supporting the Board’s rejection:

“The Commissioner is correct. … While the term “data structure” is nowhere defined in Warmerdam’s application, it is clear from its use in the specification that it refers to the ideas reflected in the process of making a bubble hierarchy.8 In IEEE Standard Computer <3 F.3d 1362> Dictionary (1991), the phrase “data structure” is defined as “ [a] physical or logical relationship among data elements, designed to support specific data manipulation functions.” (Emphasis added). Since the “data structure” of claim 6 is nothing more than another way of describing the manipulation of ideas contained in claims 1-4, it suffers from the same fatal defect they do.

Warmerdam’s reliance on Bradley, 607 F.2d 807, 202 USPQ 480 (CCPA 1979), is misplaced. The “data structure” at issue in that case was a physical, interconnected arrangement of hardware and thus embraced by the term “machine”. Id. at 812-13, 202 USPQ at 486. The same cannot be said of the data structure that is at issue in this case. Contrary to Warmerdam’s assertion, the phrase does not imply a physical arrangement of the contents of a memory. Thus, Bradley is inapposite.”

The above quoted passage from In re Warmerdam supports the notion that the concept of data and data structures can exist both as disembodied abstract ideas or as embodied physical implementations, one falling outside and other inside Section 101. I think the court got it right in this case.

So, practicioners would be well advised to keep in mind what form of data they are talking about, and stick to reinforcing that they are discussing physical forms of data if that is the result they are looking for. In future postings I will examine the notion of abstract vs. real data again, and provide more insight on how to avoid the pitfalls of confusing what the abstract with the real. In addition, we will dive back in again on the notion of data representing “real” or purely “abstract” entities, and how that has played out in past decisions or may play out in future decisions.

Welcome to my new blog on software patents. It has been a long time since I started in the patent profession – I got my USPTO registration number in 1982 – and since then the debate and confusion over software patent protection, or at least the boundaries of that protection, has continued on. It’s been a meandering journey through the 70’s, 80’s, 90’s and 00’s, featuring several early and by some accounts inconsistent Supreme Court decisions — Benson (1972), Flook (1978) and Diehr (1981), the copyright vs. patent wars (80’s), the flip-flopping of USPTO policy from anti-software, to pro-software and a little bit back again, and the largely progressive Federal Circuit jurisprudence notwithstanding the arguably backtracking “machine or transformation” test. And let’s not forget the endless never-say-die opposition to software patents by the League for Programming Freedom and its European counterparts. Yes, it has been over fifty years of a zig-zagging, one-step-forward, two-steps backward but ultimately forward-moving path to establishing patent protection for software, and it’s not over yet! Of course none of the League’s predictions that the software industry would be destroyed by patents have come true. Far from being destroyed by patents the industry has flourished into one of the US’s most important and innovate industrial sectors. And it’s still as innovative as ever as cloud computing and mobile applications and myriad other new developments place unfathomable computing power literally in the hands of billions of people throughout the world.

So let’s get back to the future – where do we find ourselves now in this long, arduous legal journey? Well, of course we are on the brink of what will no doubt be another seminal pronouncement by the Supreme Court in the Bilski case. This time it will be a pronouncement on the patentability of business methods, and the odds are against business methods. Many believe, and I can’t say I feel strongly the other way, that patent protection was conceived to protect the technological arts, not the business or finance arts, and any such expansion of statutory subject matter should be fully debated in the halls of Congress before it is imposed on the entire machinery of American business.

While it is a little late to predict what the Supreme Court will hold in Bilski since the decision is only hours or days away, I want to go on record, in my first blog posting, with my prediction. So here is what I think the Supreme Court will hold:

Congress intended that Title 35 protect the technological arts, not the business/financial arts, that the invention in question is not technological in nature, and are therefore non-statutory subject matter.

To determine whether an invention is technological in nature, one must look at the nature of the innovation, not the form of the claim, much the same way patent exhaustion under Quanta Computer focuses on the “essential features” or “material parts” of a claimed invention to determine if the sale of an item exhausts the claims at issue. As such, if the novelty of the invention lies not in its technological character, but rather its business/financial nature, then the invention is non-statutory even if claimed in terms of a computer system or computer process. Accordingly, one cannot dress up a wolf in sheep’s clothing and side-step the ban on business method patents.

On the other hand, technological innovations used to support business methods will remain patentable, so long as the nature of the innovation is technological.

What exactly is “technological” and what is not will be defined in some manner but the exact contours of this definition will remain to be decided in future cases.

Finally, the Federal Circuit’s “machine or transformation test” must include a technological arts requirement, and even then it not the only way to differentiate statutory from nonstatutory subject matter.

To find that methods of doing business are not patentable, the Court may in addition or the alternative invoke the well established prohibition on the patenting of abstract ideas or mental steps. I hope, however, that it base its decision on these principles for at least two reasons. First, a computer-implemented business process is no more abstract than many other technological software or data processing innovations that do merit patent protection. For example, many data processing innovations meriting patent protection involve improvements in organizing, storing or processing various types of information that can all be said to involve some degree of abstraction at least in the sense that the data itself only describes or models a thing or concept that exists in the “real world.” Secondly, for similar reasons I think the “mental step” analysis is also unproductive, since a computer can perform logic that is often identical to the mental steps that humans use to solve problems. So to say that a computer software invention is nonstatutory because it replicates mental steps can, if taken to its logical conclusion, requires the outcome that many if not most computer software inventions are non-statutory. Certainly, if one were to invent a computer system that could perfectly replicate the thought processes of a human it would be a phenomenal technological achievement, not nonstatutory subject matter! So, the mental steps doctrine is problematic at best when used as a test for statutory subject matter in the realm of computer-implemented inventions.

So, the next time you will hear from me is when Bilski is handed down, and that may be later today.